Gulfstream Aerospace Corporation

Patent Trials and Appeals Board

Jan 31, 2020

14840719 - (D) (P.T.A.B. Jan. 31, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/840,719 08/31/2015 Steven Firra 014.9021C1RE 1033
15846 7590 01/31/2020
LKGLOBAL (GD-Gulfstream)
7010 East Cochise Road
Scottsdale, AZ 85253
EXAMINER
NGUYEN, LINH M
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
01/31/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
gulfstream@lkglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN FIRRA
____________

Appeal 2020-000542
Reissue Application 14/840,719
Patent 8,878,701 B2
Technology Center 3900
____________

Before ALLEN R. MacDONALD, JOHN A. JEFFERY, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1–10 and 17–23. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Gulfstream
Aerospace Corporation. Appeal Br. 1.
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Reissue Application 14/840,719
Patent 8,878,701 B2

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STATEMENT OF THE CASE
Appellant seeks to reissue U.S. Patent 8,878,701 B2 (“’701 patent”)
directed to an aircraft instrumentation system for a cockpit instrument panel
that includes standby instrument display/controllers, each with a display and
control panel. Among other things, the display/controllers integrate
traditional displays and configurable controllers into a single unit. See ’701
patent, Abstract; col. 6, l. 9 – col. 7, l. 3. Claim 1 is illustrative:
1. An aircraft instrumentation system for a cockpit
instrument panel, comprising:
a first device having a standby mode and a controller mode, the first
device including:
a first display; and
a first controller having a first set of controls for controlling the
first display and aircraft systems; and
a second device having a standby mode and a controller mode, the
second device including:
a second display; and
a second controller having a second set of controls for
controlling the second display and the aircraft systems;
wherein at least one of the first display and the second display is in the
standby mode [at all times] to present attitude, altitude and airspeed when a
first primary flight display and a second primary flight display are
unavailable and the aircraft is on emergency power, and
wherein the first controller controls the first display to present aircraft
system data and system menus only if at least one of the [second display is
in the standby mode and concurrently presents attitude, altitude and
airspeed] first primary flight display and the second primary flight display is
available and the aircraft is not on emergency power, and the second
controller controls the second display to present aircraft system data and
system menus only if at least one of the [ first display is in the standby mode
and concurrently presents attitude, altitude and airspeed] first primary flight
display and the second primary flight display is available and the aircraft is
not on emergency power.
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Reissue Application 14/840,719
Patent 8,878,701 B2

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THE REJECTIONS2
The Examiner rejected claims 1–10 and 17–23 under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement.
Final Act. 3–9.3
The Examiner rejected claims 1–10 and 17–23 under 35 U.S.C. § 112,
second paragraph as indefinite. Final Act. 3–9.

THE INDEFINITENESS REJECTION
Regarding independent claim 1, the Examiner finds that the recited
first and second controllers having sets of controls for controlling first and
second displays and aircraft systems, respectively, recite means-plus-
function limitations under § 112, sixth paragraph, but lack sufficient
corresponding structure in the Specification and are, therefore, indefinite.
Final Act. 3–9; Ans. 3–7.
Appellant argues that, when read in light of the Specification, the
recited controllers are not means-plus-function limitations, but rather refer
specifically to modified conventional standby displays and configurable
controllers that existed in the art at the time of the invention. Appeal Br. 5–
10; Reply Br. 4–5. Given this interpretation, Appellant contends that the
recited controllers are amply described in the Specification to satisfy both

2 Because the Examiner withdrew a new matter rejection under § 251 (Ans.
3, 7–9), that rejection is not before us.
3 Throughout this opinion, we refer to (1) the Final Rejection mailed
November 26, 2018 (“Final Act.”); (2) the Appeal Brief filed July 15, 2019
(“Appeal Br.”); (3) the Examiner’s Answer mailed September 3, 2019
(“Ans.”); and (4) the Reply Brief filed October 31, 2019 (“Reply Br.”).
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Reissue Application 14/840,719
Patent 8,878,701 B2

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the definiteness and written description requirements under § 112. Appeal
Br. 5–10; Reply Br. 4–5.

ISSUE
Has the Examiner erred in rejecting claim 1 by finding that the recited
controllers render the claim indefinite under § 112, second paragraph? This
issue turns on whether the controller limitations are means-plus-function
limitations under 35 U.S.C. § 112, sixth paragraph and, if so, whether the
Specification describes the corresponding structure associated with those
limitations to render the claim definite.

ANALYSIS
As noted above, this dispute turns on whether the first and second
controller limitations are equivalent to means-plus-function limitations under
§ 112, sixth paragraph, for if they are, they must be construed in light of the
corresponding structure in the Specification and its equivalents. See In re
Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). For
computer-related inventions so construed, the application must disclose
enough of an algorithm to provide the requisite structure—a disclosure that
can be expressed in any understandable terms (e.g., a mathematical formula,
in prose, or as a flowchart). See Finisar Corp. v. DirecTV Group, Inc., 523
F.3d 1323, 1341 (Fed. Cir. 2008); see also Aristocrat Techs. Australia Pty
Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
As noted above, the Examiner interprets the controller limitations as
means-plus-function limitations under § 112, sixth paragraph because the
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term “controller” is said to be a “generic placeholder” that is not modified
structurally, where this “generic placeholder” performs certain recited
functions. See Final Act. 4–5; Ans. 4–7. Similarly, the Examiner interprets
the controllers’ respective sets of controls as means-plus-function limitations
because the term “controls”—like the term “controller”—does not imply any
particular type of structure, and is, therefore, also a “generic placeholder”
equivalent to the term “means.” Final Act. 4–5.
We see no error in this means-plus-function interpretation. Apart
from reciting that the first and second controllers each have respective sets
of controls for controlling respective display and aircraft systems, the claim
recites no particular structure to perform the recited functions.
Although omitting the term “means” in a claim element creates a
rebuttable presumption that § 112, sixth paragraph does not apply, such an
omission does not automatically prevent that element from being construed
as a means-plus-function element. See Williamson v. Citrix Online, LLC,
792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). In such a case, § 112, sixth
paragraph will apply if the claim term fails to recite sufficiently definite
structure, or else recites function without reciting sufficient structure for
performing that function. See id. at 1349.
That is the case here. First, we agree with the Examiner that the term
“controller” is merely a generic description for software or hardware that
performs the recited functions, despite the controllers comprising respective
sets of controls—controls that are likewise recited solely in terms of their
function. That is, the term “controller” and “controls” are merely nonce
words or “non-structural generic placeholders” that are equivalent to the
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term “means” because they fail to connote sufficiently definite structure and,
in the context of claim 1, invoke § 112, sixth paragraph. Cf. id. at 1350
(discussing similar nonce words, and interpreting the term “distributed
learning control module” under § 112, sixth paragraph because it did not
recite sufficiently definite structure); Aristocrat Techs. Australia Pty Ltd. v.
Multimedia Games, Inc., 266 F. App’x 942, 945–46 (Fed. Cir. 2008)
(unpublished) (construing “control means” as a means-plus-function
limitation); Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361,
1363–64 (Fed. Cir. 2012) (“The recitation of ‘control device’ provides no
more structure than the term ‘control means’ itself, rather it merely replaces
the word ‘means’ with the generic term ‘device.’”); Fiber, LLC v. Ciena
Corp., -- F. App’x --, 2019 WL 6216149, at *4 (Fed. Cir. 2019)
(unpublished) (construing the term “control” as a means-plus-function
limitation).
The clear import of these authorities is that the term “control” adds no
structural significance as a modifier or descriptor of a recited term to avoid
means-plus-function treatment under § 112, sixth paragraph. Therefore,
terms like “control device” and “control means”—or even the term “control”
itself as in the Ciena case cited above—must be interpreted under § 112,
sixth paragraph.
On this record, we see no reason to treat the terms “controller” and
“controls” in claim 1 any differently. To the extent that Appellant contends
that these terms are inherently structural to avoid means-plus-function
treatment under § 112, sixth paragraph (see Appeal Br. 7–9; Reply Br. 4–5),
there is no persuasive evidence on this record to substantiate such a
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contention. In this sense, the recited controllers and controls are analogous
to the claimed processors that expanded panels of this Board held were non-
structural generic placeholders that required means-plus-function treatment
in three instructive informative opinions regarding functional claiming. See
Ex parte Lakkala, No. 2011-001526 (PTAB Mar. 13, 2013) (expanded
panel) (informative); Ex parte Erol, No. 2011-001143 (PTAB Mar. 13,
2013) (expanded panel) (informative); Ex parte Smith, No. 2012-007631
(PTAB Mar. 14, 2013) (expanded panel) (informative)).4 Accord Ans. 6–7
(referring to the lack of structural description in connection with the
“controller/processor”).
We reach this conclusion despite the fact that the recited controllers
each have a respective set of controls. Like the recited “controllers,” the
recited “controls” are merely nonce words or “non-structural generic
placeholders” that are equivalent to the term “means” because they fail to
connote sufficiently definite structure. Nor do the controllers’ and controls’
respective modifying terms, namely “first” and “second,” add sufficient
structure to the recited elements to preclude § 112, sixth paragraph
construction, for they merely distinguish one set of elements from the other.
Appellant’s contention, then, that the recited controllers are not
means-plus-function limitations, but rather refer specifically to modified
conventional standby displays and configurable controllers that existed in
the art at the time of the invention (Appeal Br. 7–8), is unavailing. Not only

4 These three informative opinions are available from the Board’s web page
at https://www.uspto.gov/patents-application-process/appealing-patent-
decisions/decisions-and-opinions/informative-opinions-0#heading-8.
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is the term “controller” a nonce word as explained above, our emphasis on
Appellant’s term “modified” underscores that even assuming, without
deciding, that the recited controllers refer to conventional standby displays
and configurable controllers as Appellant contends, they are nonetheless
modified and, therefore, differ from those ostensibly conventional elements.
This acknowledged modification, then, undercuts Appellant’s contention
that the term “controller” is structurally equivalent to known controllers in
the art to presumably impart the requisite structure to the term to avoid
means-plus-function treatment under § 112, sixth paragraph.
Nevertheless, we agree with the Examiner that the ’701 patent fails to
disclose sufficient corresponding structure for the means-plus-function
limitations to perform the recited functions. Final Act. 6–8; Ans. 4–7. In
the Appeal Brief’s Summary of the Claimed Subject Matter section,
Appellant indicates that (1) the recited “controller” corresponds to control
panel 130 in column 7, lines 11 and 12 of the ’701 patent, and (2) the recited
“controls” correspond to “keys, buttons, and knobs” in column 9, lines 53 to
62, where these controls are for controlling the respective displays and
aircraft systems in column 6, lines 48 to 55.
As shown in the ’701 patent’s Figure 2, standby display/controllers
111 and 112, which correspond to the recited first and second devices
respectively (see Appeal Br. 3; Reply Br. 4), each include a display 120 and
control panel 130, the latter corresponding to the recited “controller” as
noted above. As the ’701 patent explains, the control panel 130 not only
enables selecting options to manage aircraft systems, but it can also be
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programmable to control any number or type of flight deck avionic displays
and other aircraft systems. ’701 patent, col. 7, ll. 15–24.
Figure 4, reproduced below, shows display/controller 111 in the
controller mode, including control panel 130 with knobs 4305 and keys 440.

’701 patent’s Figure 4 showing control panel 130 with knobs and keys

As shown above, the control panel includes knobs 430 with textual
labels “SET” and “BARO,” and keys 440 with textual labels “ESC,” “SFD,”
“SENSOR,” and “EVS SVS.” The control panel in Figure 4 also includes
Display System and Aircraft System Management Menu Keys 450 and 460
that include textual labels such as “APU,” “CPDLC,” “CPCS,” “PFD,”

5 Although the ’701 patent refers to knobs 430 and 431 in column 9, line 55,
numeral 431 does not appear in Figure 4. We, therefore, refer to both knobs
with the reference numeral 430 consistent with the depiction in Figure 4.
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“WMGT,” “MEM,” “SYNOPTIC,” etc. According to column 9, lines 54 to
60, the knobs 430 may be used to rotate and push set functions to select
menus and displays, and keys 440 can not only be configured as a set of four
basic standby display and higher order display selection keys, but also can
configure and control the display in the standby mode as shown in Figure 5.
Given the apparently specialized functions associated with the control
panel’s knobs and keys indicated by their respective textual labels—
specialized functions that are not detailed with particularity in the ’701
patent—the Examiner’s point that the functions of the recited controller,
namely the control panel 130, go well beyond those of the basic functions of
general-purpose processors or computers (see Ans. 6–7) has merit. In short,
ordinarily skilled artisans would understand that implementing the control
panel’s particular specialized functionality requires, among other things,
some sort of processing capability and associated algorithms to effect those
particular functions. That the control panel is programmable to control any
number or type of flight deck avionic displays and other aircraft systems—
particular programming whose associated algorithms are likewise
undisclosed—only bolsters this conclusion. See ’701 patent, col. 7, ll. 20–
24.
As the Examiner indicates (Ans. 6–7), the ’701 patent does not
disclose the corresponding structure of the recited controller, namely the
control panel’s algorithm, with sufficient particularly to perform the recited
functions. To be sure, this requisite algorithmic-based disclosure can be
expressed in any understandable terms, such as a mathematical formula, in
prose, or as a flowchart. See Finisar, 523 F.3d at 1341. But apart from
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Patent 8,878,701 B2

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merely indicating what the control panel 130 does, the ’701 patent does not
explain how it does it, let alone describe the underlying algorithm to achieve
that result. At best, the control panel’s functionality is described at a high
level of generality, with no details as to what the particular specialized
functions associated with the knobs’ and keys’ textual labels in Figure 4 are,
let alone how these unidentified functions are implemented.
This lack of corresponding structure is crucial here, for the inquiry is
whether ordinarily skilled artisans would understand the specification itself
to disclose a structure—not simply whether those artisans would be capable
of implementing a structure as Appellant seems to suggest. See Biomedino,
LLC v. Waters Technologies Corp., 490 F.3d 946, 953 (Fed. Cir. 2007).
“Accordingly, a bare statement that known techniques or methods can be
used does not disclose structure. To conclude otherwise would vitiate the
language of the statute requiring ‘corresponding structure, material, or acts
described in the specification.’” Id.
Therefore, to the extent that Appellant contends that the ’701 patent
discloses sufficient corresponding structure in connection with the recited
controller because it has “a reasonably well understood meaning in the art”
(see Appeal Br. 8), we find such a contention unavailing. That Appellant
acknowledges that the recited controllers refer specifically to modified
conventional standby displays and configurable controllers (Appeal Br. 7–8)
only further undercuts Appellant’s argument in this regard. Our emphasis
on Appellant’s term “modified” underscores that even assuming, without
deciding, that the recited controllers refer to conventional standby displays
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Patent 8,878,701 B2

12
and configurable controllers as Appellant contends, they are nonetheless
modified and, therefore, differ from those ostensibly conventional elements.
To be sure, a patent’s disclosure is written for a person of skill in the
art, and such a person comes to the patent with the knowledge of what has
come before. LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d
1336, 1345 (Fed. Cir. 2005). Therefore, it is unnecessary to spell out every
detail of the invention in the Specification; only enough must be included to
convince a person of ordinary skill in the art that the inventor possessed the
invention and to enable such a person to make and use the invention without
undue experimentation. Id.
But that is not the case here. In short, there is insufficient structure
disclosed in the ’701 patent corresponding to the recited controllers that, as
noted previously, are means-plus-function limitations. Therefore, claim 1 is
indefinite.
Accordingly, we are not persuaded that the Examiner erred in
rejecting claim 1, and claims 2–10 and 17–23 not argued separately with
particularity.

THE WRITTEN DESCRIPTION REJECTION
For reasons similar to those indicated regarding the indefiniteness
rejection, we are also unpersuaded of error in the Examiner’s written
description rejection of claims 1–10 and 17–23. We reach this conclusion
even assuming, without deciding, that the corresponding structure associated
with the recited controllers would have been obvious from Appellant’s
original disclosure, for it is well settled that a description that merely renders
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the invention obvious does not satisfy the written description requirement
under § 112. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352
(Fed. Cir. 2010) (en banc) (citations omitted).
Therefore, we are not persuaded that the Examiner’s written
description of claims 1–10 and 17–23 under § 112, first paragraph is
erroneous.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–10,
17–23
112,
second
paragraph
Indefiniteness 1–10, 17–23
1–10,
17–23
112, first
paragraph
Written
Description
1–10, 17–23
Overall
Outcome
1–10, 17–23

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED